Trademarking Principles for Tech Start-ups: A Brand Manager’s Guide

Establishing a trademark is important for any business, but the competition is particularly fierce in the tech industry. With competitors fighting over everyday words that have been in use for centuries, it’s no wonder tech start-ups are so eager to snag trademarks. If you’re just starting out, however, applying for trademark registration isn’t your first step. These essential trademarks for start-ups principles will help you chart the right path.

Active Trademark Use is Essential

If you’re new to trademarks, you may assume that you have to register a mark before you can use it and that obtaining said registration offers blanket protection while you develop the product. This seems practical, but the assumption is actually backward. You must use your trademark in commerce to establish your rights. If you’re the first to use your trademark and your company uses it widely in active commerce, you get “common law” trademark rights to the mark even if you haven’t registered it yet.

If you have an original trademark for your product that does not infringe upon anyone else’s trademark rights, begin using it as early as possible to establish your rights to the mark. Widespread use will protect you against infringement well before your legal trademark registration goes through. In fact, use of the trademark is an essential part of gaining registration. You’re expected to use the mark first and establish it as your own before being approved for registration.

Competitors Don’t Need Registration

Just as you don’t have to register your mark to establish your rights to it, so too can a competitor claim infringement if you choose a similar mark, regardless of whether it’s registered at the USPTO. Carefully research your proposed trademark both in the USPTO and in your industry. If another company is already using the same or a similar mark, move on to something else. Google is a valuable resource to use along with the database of registered trademarks.

Trademarks work on a strictly “first come, first serve” basis. It doesn’t matter who filed for registration first if two competing companies are locked in battle over the use of a particular mark. The question is: Who established use of the mark in commerce first? Registration is important, but it’s not necessarily your first priority.

A Trademark Must be Original

You can’t trademark every business or product name, even if you have established use. A plain descriptive or generic trademark may work just fine for some companies, but you must understand that you can’t trademark a generic term. “The Car Repair Company” isn’t original enough for a registered trademark. As a tech company, this is a particularly important distinction. While a small local repair shop can operate just fine with a name that doesn’t have an official trademark, most tech companies will want to take steps toward protecting their property nationally if not globally.

Defining original terms and phrases is exceedingly difficult in the tech landscape. Skype, for example, owns the trademark to the word “silk.” Zynga trademarked “with friends.” Facebook trademarked “Face,” “Wall,” “F,” and “FB.” Navigating the landscape of available terms is challenging in an industry where even common words like “glass” provoke the need for protection.

Stay Within the Tech Industry

If you’re a tech start-up, the only competitors you need to worry about are those in the tech industry, and those that provide related types of goods or services. It’s unlikely that customers will confuse a computer program with a food product, so you don’t have to worry about trademark infringement from a dessert company if you’re using a general term. Google proved how effective this strategy is, naming Android OS versions after products like Gingerbread. However, KitKat was another story. Since a KitKat bar is more distinctive than a jelly bean, Google had to get permission from Hershey for the cross-promotional deal.

Obviously the dessert product angle is taken in the tech sphere, but the concept opens up a world of new possibilities for naming tech products after real-world items in unrelated industries. This tactic could prove easier than battling it out for the trademark to a term that’s obviously associated with technology.

Using the Right Symbols

The registered trademark symbol “®” is only available for words and phrases you have legally registered with the U.S. Trademark Office. While you don’t have to use it, you may want to so that competitors know as soon as they spot your literature that you have legal rights to the name. It’s tempting to slap that little icon on everything you want to claim as your own, but you have to restrain yourself from using the “®” until you have legal rights to do so.

You can, however, use “TM” symbol for anything that you’re claiming the trademark for. This does not mean that you can tag “TM” onto any word or phrase on a whim. You still need to do your due diligence and establish that the mark is unused. If you try to use “TM” without proper research, you could find yourself facing a lawsuit from a competitor. If you believe that your trademark is free and clear, however, “TM” is a fine way to place your stamp on the word or phrase and put up a little flag that tells competitors you consider this trademark your own.

Exceptions to the Rule

As mentioned above, generic terms are not registrable as trademarks. Additionally, descriptive terms may also be problematic. However, the right marketing strategy can elicit an exception. “Georgetown Cupcakes” built enough national buzz about its product to obtain five separate trademarks for the name. If your company or product name isn’t inherently distinctive, you have to establish “secondary meaning” or “acquired distinctiveness”. This means that the word or phrase has gained special significance among the consumer public.

Tech companies have an advantage in this area because it’s easier to establish quantifiable buzz about a product through social media sites and online use than it is to prove that your cupcakes have special significance. A strong marketing campaign can help you turn a merely descriptive term into a trademarked phrase if it gains enough traction.

Trademarks are a touchy subject, but tech companies that know how to navigate them have a distinct advantage over the competition. Establish, promote, and protect your marks in this order to get a strong foothold in this domain.

By: Xavier Morales, Esq.

Xavier Morales, Esq. is a licensed trademark attorney. Mr. Morales founded his trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Mr. Morales’ law practice emphasizes trademark registration, counseling and enforcement.

Read more about Mr Morales, and The Law Office of Xavier Morales here.